filing a trademark

We frequently hear from new breweries that would like to register their brewery name but aren’t sure if they’re “allowed” to register it. For them, it’s less a question of whether their mark is confusingly similar to another mark. It’s more of, do I meet the standards for a federal trademark in the first place?

It’s important to know that no matter how much beer you’re brewing and selling right now, even none, there’s a way to get the ball rolling on a federal registration to protect your brewery or beer name. The United States Patent and Trademark Office will look at filings under section 1(a), where marks are already in use, and under section 1(b), where marks aren’t in use just yet. Section 1(b) is often referred to as the intent to use section.

Even if you file under section 1(b), though, you eventually do have to put your mark into use. But, the good news is, the USPTO gives you up to 30 months to start that use. Breweries often take advantage of this provision when they’re in the planning stages, whether for their brewery or an important upcoming beer. The USPTO just requires that you prove you’re actually using the mark within that timeframe, then you get rights all the way back to the date you initially filed (assuming, of course, your selected mark doesn’t face other potential problems during the registration process).

In other words, if someone else first starts to use a mark that’s the same or confusingly similar to yours after you’ve started your filing process, once you perfect your registration, you’d have superior rights. Of course, one of the other big benefits to filing a section 1(b) is that you’re effectively saying, hey, I’m planning to use this mark, and then others steer clear of future problems by picking a different brewery or beer name in the first place.

Before you even get to the USPTO – there are a number of things you can do to preserve your brand.

Many brewers think that their brand is an afterthought. Others believe it is the end-all-be-all to their success. Well, there is no doubt that a brewer’s brand is incredibly valuable. The logo, design, and copy on the packaging all require attention – early on.

So I am often asked by brewers to tell them when they need to go about protecting their name and logo. The answer: yesterday. The craft brewing industry has become swollen. There is a massive group of potential branding competitors and you do not want your brand to become confused with another. Therefore, you need to be proactive and take some steps to ensure that your brand stays yours, and yours only.

Even before you get to brewing commercially, you should focus in on a theme that represents what you make as a brewer. The theme will help you easily craft a name and logo that fit your motif. Once you hammer it down and work with an artist to put your vision on display – it’s time to be proactive and protect it.

Before you speak to an attorney, you could do the following:

Search TESS, the federal trademark registry. Look for other “beer” related brands that might be confusingly similar to your own name.

Search COLAS public, the federal label registry. Look for other labels and brands that are on the market with a similar name – heck even a specific beer with your brewery’s name would be potentially a threat.

Check for available Domain Names. Go to your favorite online domain provider (GoDaddy, 1&1, etc) and search for your name and similar variations (i.e., if you pick Little Bear – look for Small Bear, Tiny Bear, etc)

Check for social media availability. Go to Facebook and Twitter and make sure someone else is not using your handle for a branding purpose.

Once you have satisfied yourself that you have a brand — call your counsel and file your trademark. Under federal trademark laws, you have the ability to file on the basis of “intent to use,” meaning that you are not required to prove to the US Patent & Trademark Office that you are currently using the mark in interstate commerce. Instead, you get some time to get the brewhouse in place, fire up the kettles and begin making beer.

A federal trademark registration is the best way to inform the general public that you intend to use this brand. You can file a mark for either your name alone, your logo alone, or a combination of the two – so there is little reason to delay.

Be proactive and protect your brand early on. It’s simple, efficient and effective. Then, get back to brewing.

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